Ex Parte Selle et al

Patent Trial and Appeal BoardAug 29, 2014

12145913 (P.T.A.B. Aug. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL A. SELLE and GREGORY T. PRELLWITZ ____________ Appeal 2012-008464 Application 12/145,9131 Technology Center 3700 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 34–37 and 39. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). 1 According to the Appellants, “[t]he real party in interest in this appeal is CMD Corporation.” Appeal Br. 3. Appeal 2012-008464 Application 12/145,913 2 Claimed Subject Matter Claim 34, reproduced below, is illustrative of the subject matter on appeal. 34. A cap for a sealer for a rotary bag machine comprising a release layer for mounting over the cap, and a heating wire stitched into the release layer and into the cap, wherein the cap includes a sealing area and a perforating area. Rejections Claim 34 is rejected under 35 U.S.C. § 102(b) as anticipated by Buob (US 3,586,821, iss. June 21, 1971). Claims 34–36 are rejected under 35 U.S.C. § 102(b) as anticipated by Schott (US 3,271,560, iss. Sept. 6, 1966). Claims 35–37 and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Buob. Claims 35–37 and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Buob and Schott. NEW GROUND OF REJECTION Independent claim 34 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 34 is indefinite as being ambiguous because it is unclear if the claim: (1) is directed to a cap; or (2) is directed to a type of arrangement that encompasses more than a cap, for example an arrangement that includes a cap, a release layer, and a heating wire. Alternatively, claim 34 is indefinite because the claim is internally inconsistent. Appeal 2012-008464 Application 12/145,913 3 As for the former, the claim’s preamble and transitional phrase, which recites “[a] cap for a sealer for a rotary bag machine comprising . . . ” (emphasis added), suggests that the claim is directed solely to a cap. Additionally, the open-ended transitional phrase “comprising” suggests that the body of the claim further limits the structure of the cap by claiming “a sealing area and a perforating area” and the cap’s ability to relate with other structures, particularly, a release layer and a heating wire. As for the latter, the body of the claim, i.e., “a release layer for mounting over the cap, and a heating wire stitched into the release layer and into the cap, wherein the cap includes a sealing area and a perforating area” (emphasis added), suggests that the body of claim is directed to a type of arrangement, which includes a cap, a release layer, and a heating wire, and further claims how these structures relate to one another. Additionally, the preamble of the claim, which recites “[a] cap for a sealer for a rotary bag machine” (emphasis added), may vaguely suggest that the claim is directed to some type of arrangement including a cap. Alternatively, the preamble of claim 34 and the body of claim 34 suggests that the claim is illogical because it is internally inconsistent. For example, claim 34 recites, “[a] cap . . . comprising a release layer for mounting over the cap . . . .” The phrase “the cap” refers to “[a] cap” in the preamble of the claim. Accordingly, claim 34 is internally inconsistent as it requires the claimed “release layer” to be part of the cap as well as mounted over the cap, i.e., itself. Thus, independent claim 34 is indefinite under 35 U.S.C. § 112, second paragraph. Accordingly, claims 35–37 and 39, which depend from claim 34, are also indefinite under 35 U.S.C. § 112, second paragraph. This Appeal 2012-008464 Application 12/145,913 4 NEW GROUND OF REJECTION is pursuant to our authority under 37 C.F.R. § 41.50(b). ANALYSIS In view of our determination that claims 34–37 and 39 are indefinite, it follows that the prior art rejections of claims 34–37 and 39 must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. DECISION We REVERSE the rejections of claims 34–37 and 39. We enter a NEW GROUND OF REJECTION of 34–37 and 39 under 35 U.S.C. § 112, second paragraph, as indefinite pursuant to our authority under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2012-008464 Application 12/145,913 5 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Klh